In the recent Singapore High Court decision of Caterpillar Inc v Ong Eng Peng (formerly trading as Catplus International) [2006] SGHC 58, Caterpillar Inc, a US incorporated company sued the defendant who had formerly traded as business known as Catplus International. The plaintiff alleged that the defendant’s use of the CATPLUS marks in respect of construction equipment and machinery had infringed the plaintiff’s various CAT trade marks registered in Singapore.

The plaintiff therefore claimed that the defendant had committed trade mark infringement and passing off. The relief sought by the plaintiff in the suit was for an injunction; an order for obliteration of the defendant’s infringing marks and/or an order for delivery up or destruction of the defendant’s offending goods and finally for an inquiry as to damages or an account of profits.

The plaintiff’s trade marks and goodwill

The plaintiff is in the business of designing, manufacturing, marketing, distributing and selling an extensive range of industrial, agricultural, construction, mining and road-building equipment together with the parts and accessories for such equipment. It also provides services such as the rental, maintenance, repair and distribution of its products. The Plaintiff is also the registered proprietor of the various CAT trade marks in Singapore in Classes 7 and 12.

The plaintiff has been trading in Singapore since 1939 and has maintained a presence in Singapore through various wholly owned subsidiaries, almost all of which had the word “Caterpillar” in their names. Net sales of the plaintiff’s products in Singapore and in Asia between 2000 and 2005, bearing or using the get-up and the plaintiff’s CAT marks, ran into hundreds of millions of US dollars annually.

In addition, the plaintiff claims to use a distinctive get-up on its products and services that are instantly recognizable as belonging to the plaintiff. The prominent features used by the plaintiff to distinguish its products are the word “CAT” in white and a triangle device in yellow directly beneath the “A”, superimposed over a black patch with a red line running across the black patch (“the get-up”). The black patch is located on the yellow body of the plaintiff’s products.

The plaintiff is commonly known in the industry as “CAT”, and its website is designated as http://www.cat.com. It is also industry practice for the plaintiff’s products to be known as “CAT” products as a shorthand version of “CATERPILLAR”.

The plaintiff’s case against the defendant

The defendant business activities were said to be “manufacture and repair of construction machinery and parts” and “machinery and equipment”. The defendant terminated his sole proprietorship on 22 September 2004.

During the period between 9 February 2004 and 22 September 2004, the defendant used one or more of the following signs or marks, namely “CATPLUS” by itself or with the letters in yellow or white on a black rectangular background with a red line running across the black background, together with the inscription “CATPLUS INC, USA” in small-sized print at the bottom right-hand corner of the rectangle. He also dealt in construction equipment and machinery that was affixed with the offending marks (offending products).

Upon receiving information in December 2003 that the defendant and business entity known as Worldwide were dealing in offending products, the plaintiff had private investigators investigate the business activities of the defendant, and at trial the plaintiff adduced evidence of the defendant’s brochures given to the private investigators bearing the name “CATPLUS”.

As further evidence of infringement, the plaintiff’s solicitors also obtained printouts of some salient pages from the defendant’s website at www.catpluscorp.com. The plaintiff’s search on the entity Worldwide showed that its registered office was identical with that of Catplus International’s business address.

The plaintiff argued that the defendant’s “CATPLUS” is conceptually similar to the plaintiff’s “CAT” since the suffix “PLUS” is merely laudatory and entirely non-distinctive in nature. It served no purpose in distinguishing the offending marks from the plaintiff’s “CAT” marks. There was also no indication in the offending marks also did not inform the public that the defendant’s products did not originate from the plaintiff.

The plaintiff also contended that the defendant should have known about the plaintiff’s CAT marks, due to their highly distinctive get-up and the nature of the plaintiff’s business activities. In addition to the similarities between the offending marks and CAT marks, the offending products deliberately adopted a get-up and nomenclature and model numbers used exclusively by the plaintiff. One example would be the model number 918F identified by the plaintiff’s wheel loader machine where the defendant’s equivalent bore the model number 918P.

Another similarity pointed out by the plaintiff was that the defendant’s colour scheme and design as well as its website also intentionally mimicked the plaintiff’s get-up.

The plaintiff alleged that it had suffered or was likely to suffer irreparable loss and damage as the construction equipment and machinery and services offered by the defendant on his website and in the brochures were similar or identical to the plaintiff’s. The offending products were of inferior quality and the continued use of the offending marks on the offending products is injurious to the plaintiff’s goodwill and proprietary rights in its registered trade marks.

Finally, the plaintiff’s sole authorized dealer in Pakistan and in Sudan who saw the defendant’s product in their countries claimed that they were confused as to whether the Catplus machine was manufactured by the plaintiff and whether there was some connection between the plaintiff and Catplus.

The defendant’s defence

The defendant denied that he had infringed the plaintiff’s trade marks and that had never traded under Catplus International. The sole proprietorship remained dormant and there was absolutely no activity and on 22 September 2004, the defendant deregistered Catplus International. The defendant claimed that he did not own or use the website in issue and was not responsible for its contents as it belonged to Worldwide.

The defendant argued that the “CATPLUS” mark was visually and phonetically dissimilar from the plaintiff’s trade marks. There was therefore no likelihood of confusion just because both marks bear the three common letters “CAT”. As for the allegations on passing off, he claimed that he could not have made any representation that would have led to confusion between the Catplus products and the plaintiff’s, as he had never traded as Catplus International.

The court’s decision

The judge did not believe the defendant’s assertion that he had not traded under the name of Catplus International as the website in issue described Catplus International as the “Asia Main Office” of the Catplus group. Therefore, he was conducting business even if the office was not a profit centre in the chain of supply and sale of Catplus machinery, it was the first point of contact for anyone interested in Catplus machinery after having visited the website in issue. The website in issue was in all likelihood designed and maintained by the defendant.

Clearly, the defendant, Worldwide or any of the entities listed in the website in issue or in the brochures did not obtain the plaintiff’s consent to use any of its CAT marks. The defendant had use in the course of trade the offending marks on catalogues and commercial documents and in advertising.

Using the doctrine of imperfect recollection, the judge find that visually and aurally, the offending marks are similar to the plaintiff’s CAT marks. Based on the facts of the case, there is also no doubt that the goods and services of the defendant are identical or, at least, very similar with the plaintiff’s.

The judge also found that that it is very likely that a significant segment of potential purchasers and users would be confused by the defendant as to the source of the goods and services and may even believe that the offending products, which bore the laudatory suffix “PLUS”, are enhanced or updated models of the Caterpillar equipment and machines.

At the end, the plaintiff’s claims against the defendant on trade marks infringement and in passing off were allowed by the court. The plaintiff was also awarded the costs of the proceedings up to the stage of trial. The court also granted injunctions sought to restrain the defendant from infringement of the plaintiff’s CAT marks and from passing off his goods and services as those of the plaintiff.